II . Amendment to the Specification or Drawings
of Pending Applications Timing for Amendment
Once the 15 months period from the priority date for voluntary
amendment has been lapsed, patent applicant is not allowed
to amend the specification or drawings until and unless he
receives an office action under the current law. This limitation
on timing of amendment is removed and the applicant will be
free to amend his specification or drawings even before he
receives the first office action. (Art 47(1))
Scope of Amendment
On the other hand, the scope of amendment has been narrowed
under the amended Patent Act. Under the current law, the test
for allowable amendment was whether "the gist of the invention"
is changed by the proposed amendment. Under the new law, the
test is whether a "new matter" is introduced. The difference
between the two tests is not clear yet and we have to wait
accumulation of cases for the interpretation of the change.
However, it is understood that the new test is more restrictive
than the old test. (Art. 47(2))
Appeal to the Examiner's Decision of Un-Acceptable Amendment
Under the current system of appeal against the Examiner's
rejection to the amendment, the Examiner has to wait a decision
by the Patent Trial Tribunal in relation to acceptability
of the amendment before he finally reject the pending patent
application. This provision was intended to give the applicant
an opportunity to argue before the tribunal for the acceptance
of his amendment to the specification. However, this provision
has been a cause of delay in the appeal against the final
rejection by the Examiner.
Under the new law, the Examiner will reject the application
itself when the proposed amendment is found as un-acceptable
and the applicant will argue the acceptance of the amendment
as well as the patentability of the invention before the Patent
Trial Tribunal. (Art. 51(1))
Timing for Amendment
